Can donate Nutella filled jars to NGOs feeding poor: Delhi High Court in trademark violation case

The court directed the defendants to return a total of 3,05,925 jars to the plaintiff company within two weeks which were seized from two locations in a raid by officials concerned.

Case

Italian company ‘Ferrero SpA’ approached the Delhi high court in 2023 alleging infringement of its trademarks including ‘Nutella glass jars’ and other distinctive labels associated with the mark Nutella, passing off counterfeit goods under the identical mark along with other ancillary reliefs and for damages and costs.

The company had filed a civil suit seeking a decree of permanent injunction restraining the defendants from infringing the its registered trademarks, including its glass jars designs, distinctive labels associated with the mark Nutella passing off counterfeit goods under the identical mark along with other ancillary reliefs and for damages and costs.

The plea by the company alleged that the defendant individuals were involved in manufacturing and selling of empty glass jars which is a near identical copy of the original ‘Nutella jar’.

The defendants stated that the glass jars manufactured by them are referred to as Nutella jar in their industry and they were offering these glass jars on their website as Nuteall glass jars.

They also admitted offering these glass jars for sale on their own own website and third-party e-commerce websites.

Ruling

The court directed the defendants to destroy all the other packaging material found and seized at the aforesaid premises in the presence of the representative of the Plaintiff within four weeks.

Saying that the three defendants are “first-time knowing infringers”, the court denied the claim of Rs 53.3 by the company calling it “imaginary”. The court said the assessed value of counterfeit products of Rs 533.10 crores is not tenable.

The court directed the defendants to pay Rs 10 lakh to the company taking into consideration the fact that initially in 2023 they resisted the suit when it was filed.

Finding no material on record to hold that the defendants colluded with third parties to sell counterfeit products of the company, the court said there is also no iota of evidence in this suit related to this allegation.

The value of the seized jars has been assessed as Rs 62.84 lakhs by the company and handover of this inventory results in losses to the defendants as well will act as deterrent against them, the court said.

The court rejected the submission of the defendants that they were unaware about the company’s proprietary rights in the shape mark for the jar.

It also directed the defendants to destroy all the other packaging material found and seized in the presence of the representative of the company within four weeks.

Arguments

Advocate Pravin Anand, the counsel for the company submitted that it coined and adopted the trademark ‘NUTELLA’ for the first time in or about 1964 and began using it for their novel hazelnut cocoa spread. In the same year the iconic ‘Nutella jar’ was created.

The plaintiff informed the court that its Nutella products have been available in the Indian market since 2009 and there is considerable market presence of its products in India.

Senior advocate Samrat Nigam appearing for the defendants submitted that there are other manufacturers in the industry who manufacture identical infringing jars. However, the court said this does not justify their infringing actions.

He submitted that the defendants do not have any role in manufacturing any alleged counterfeit products and the claim of damages raised by the company on the alleged values of finished product is misconceived.